TTAB Issued 40 Precedential Opinions in Calendar 2015

By my count, the TTAB issued 40 precedential opinions in calendar year 2015. (I say “calendar year” to distinguish my count from the official USPTO count, which is based on its fiscal year ending on September 30th). This number is consistent with the total for each of the past three years (45, 44, 44). While trademark developments in the courts may have overshadowed the TTAB’s efforts this past year, there were still plenty of decisions worth noting.

Section 2(a) – Disparagement:

• WYHA? Precedential No. 8: TTAB Affirms Section 2(a) Disparagement Refusal of PORNO JESUS

Section 2(a) – False Association:

• Precedential No. 39: TTAB Dismisses 2(a) False Association Claim: MARATHON MONDAY vs.BOSTON MARATHON
• Precedential No. 36: TTAB Gives the Boot to Nike’s Inadequate Section 2(a) and 2(c) Claims
• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of “PRINCESS KATE” and “ROYAL KATE” for Clothing

Section 2(c) – Consent to Register:

• Precedential No. 36: TTAB Gives the Boot to Nike’s Inadequate Section 2(a) and 2(c) Claims
• Precedential No. 4: TTAB Affirms 2(a) and 2(c) Refusals of “PRINCESS KATE” and “ROYAL KATE” for Clothing

Section 2(d) – Likelihood of Confusion:

• Precedential No. 38: Fame of “will.i.am” Can’t Save “I AM” Trademark Applications From 2(d) Bar
• Precedential No. 34: MMMBop! TTAB FInds C.H. HANSON Confusable with HANSON for Hand Tools
• Precedental No. 33: North Face Gets Split Decision In Multi-Class Section 2(d) Opposition
• Precedential No. 32: Orange Bang Wins “OLÉ” Section 2(d) Beverage Bullfight
• Precedential No. 27: Fame of BUD for Beer Brings Victory over WINEBUD for Wine
• Precedential No. 20: 13th du Pont Factor Yields TTAB 2(d) Reversal
• Precedential No. 16: MARAZUL and BLUE SEA Confusable for Seafood, Says TTAB
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• Precedential No. 10: TTAB Test: Are These Two Marks for Furniture Confusingly Similar?
• Precedential No. 9: SMART BALANCE Not Confusable with SMART ONES for Frozen Food, Says TTAB
• Precedential No. 6: “PMONEY” Confusable with “POPMONEY” for Electronic Funds Transfer, Says TTAB
• Precedential No. 2: Applicant’s Third-Party Registrations Show That RV Trailers and Trucks are Not Related

Section 2(e)(1) – Deceptive Misdescriptiveness:

• Precedential No. 35: TTABang! SMART SERIES Merely Descriptive of Firearm Safes
• Precedential No. 31: “THCTea” Deceptively Misdescriptive of Tea-Based Beverages, Says TTAB

Section 2(e)(5) – Functionality:

• Precedential No. 37: TTAB Affirms Functionality Refusal of Hot Bonder Product Design

Dilution:

• Precedential No. 14: TTAB Sustains Yankees’ Dilution Claim Re “THE HOUSE THAT JUICE BUILT”

Failure to Function:

• TTAB Precedential No. 25: “WALK-IN-SHOPPER” Not Used As Source Indicator for Applicant’s Services
• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Monster Truck Body Ornamentation

Genericness:

• Precedential No. 13: TTAB Finds BUYAUTOPARTS.COM Generic for …. Guess What?

Laches:

• Precedential No. 5: TTAB Grants Partial Summary Judgment On Laches Ground

Lack of Bona Fide Intent:

• Precedential No. 30: Finding Lack of Bona Fide Intent, TTAB Sustains SWISS GRILLS Opposition

Ownership:

• Precedential No. 21: TTAB Sides With Band in “WONDERBREAD 5” Ownership Dispute
• Precedential No. 18: U.S. Seller, Not Foreign Manufacturer, Owns Trademark, TTAB Rules

Discovery/Evidence/Procedure:

• Precedential No. 40: TTAB Refuses to Allow Witness to Change Testimony in HOLLYWOOD HOTEL Opposition
• Precedential No. 28: TTAB Denies Motion to Add Claim Preclusion Defense As Futile
• Precedential No. 26: TTAB Dismisses Opposition As Untimely, Denying Opposer Benefit of Another’s Extension of Time
• Precedential No. 24: TTAB Summarily Dismisses Cancellation Petition Due to Claim Preclusion
• Precedential No. 23: Abandonment and Opposition Filed on Same Day, TTAB Dismisses Opposition Without Prejudice
• Precedential No. 22: Unreasonable Party Loses Right to Substantive Objections to Document Requests
• Precedential No. 19: PTO “Clear Error” Determination Not Reviewable by Petition or Appeal
• Precedential No. 17: TTAB Refuses to Vacate HOUNDSTOOTH MAFIA Decision
• Precedential No. 11: Despite Examination Errors, Issued Registration Must Be Cited as Section 2(d) Bar
• Precedential No. 3: TTAB Grants Motion To Substitute New Expert Witness After Discovery Closed
• Precedential No. 1: Applying “Proportionality,” TTAB Limits Number of Discovery Requests to Avoid Abuse

Application Requirements:

• Precedential No. 12: WYHA? TTAB Says Application Must Be Verified, Affirms Refusal to Register

Concurrent Use:

• Precedential No. 29: TTAB Dissolves Concurrent Use Proceeding, Plaintiff Fails to Prove Prior Use
• Precedential No. 15: TTAB Refuses Concurrent Use Registration of DELMONICO’S For Restaurant Services